FEDERAL COURT OF AUSTRALIA Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2020] FCA 396 File number(s): VID 330 of 2019 Judge(s): O'Bryan J Date of judgment: 26 March 2020 Catchwords: EVIDENCE - Evidentiary objections – admissibility - relevance - hearsay Legislation: Evidence Act 1995 (Cth) Trade Marks Act 1995 (Cth) Cases cited: Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923 Date of hearing: Determined on the papers Registry: Victoria Division: General Division National Practice Area: Intellectual Property Sub-area Trade Marks Category: Catchwords Number of paragraphs: 60 Counsel for the Applicant: Mr E Heerey QC with Mr S Rebikoff Solicitor for the Applicant: K&L Gates Counsel for the Respondents: Mr C Golvan QC with Ms M Marcus Solicitor for the Respondents: Brand Partners Commercial Lawyers REASONS FOR JUDGMENT EVIDENTIARY RULINGS VID 330 of 2019 BETWEEN: SWANCOM PTY LTD Applicant AND: THE JAZZ CORNER HOTEL PTY LTD ACN 615 168 968 (and others named in the Schedule) Respondents O'BRYAN J: Introduction 1 The applicant is the operator of a live music venue from premises at 57 Swan Street, Richmond, Victoria. It owns a number of registered trade marks in class 41 for live music performances and ticket booking services for such performances, including "THE CORNER HOTEL", "THE CORNER" and "CORNER". 2 The respondents are the operators of, relevantly, two businesses that are both conducted within the building located at 352 William Street, Melbourne, Victoria. The first business is a hotel called The Jazz Corner Hotel and has its street entrance at 352 William Street. The second business is a jazz music venue called Bird's Basement that has its street entrance at 11 Singers Lane, Melbourne, which is at the back of the building. 3 The applicant brought these proceedings against the respondents under s 120 of the Trade Marks Act 1995 (Cth) (TMA) alleging that the respondents have infringed the applicant's trade marks by using as trade marks the names "The Jazz Corner Hotel", "Jazz Corner", "Jazz Corner of Melbourne" and "Jazz Corner of the World" in relation to live music services. The respondents deny infringement on multiple grounds, including whether the respondents have used the "Jazz"-related names as trade marks, whether they have used the names in relation to live music services and whether the names are deceptively similar to the applicant's trade marks. 4 The respondents have brought a cross-claim seeking rectification of the Register of Trade Marks by cancellation of the applicant's trade marks on the following grounds: ss 88(2)(a) and 41 of the TMA (the trade marks are not capable of distinguishing the applicant's services) and s 88(2)(c) of the TMA (use of the trade marks is likely to deceive or cause confusion). 5 The foregoing is not intended to be a comprehensive summary of the issues in dispute between the parties, but is a sufficient summary to explain the evidentiary rulings that follow. 6 The trial of this proceeding occurred on 16 and 17 March 2020 and was then adjourned for the parties to prepare written closing submissions. In the course of the trial, I made rulings on objections to the affidavit evidence of witnesses who were called for cross-examination. In respect of witnesses who were not required for cross-examination, the parties agreed to file written submissions addressing their objections and that I should rule on the objections "on the papers". On 19 August 2020, each of the parties filed a further written submission addressing the remaining evidentiary objections that were pressed. 7 One of the rulings I made during the trial is relevant to other evidence considered below, and it is convenient to explain the reasons for that ruling. The ruling concerned Mr Dadon's affidavit affirmed 17 February 2020 which exhibited: (a) screenshots of webpages for various hotel businesses trading under names that included the word "corner", including The Corner Hotel Alexandra, Victoria; The Corner Pub in Liverpool, NSW; and the Corner Hotel in Ballarat, Victoria; (b) an online search of the St Kilda Historical Society which showed that there was a "Corner Hotel" on the corner of Fitzroy and Barkly Streets in St Kilda which operated from 1864 until 1967; and (c) an online search of the Victorian Heritage Database (an electronic database of Victoria's significant heritage places and objects published by the Heritage Council of Victoria) for hotels or pubs using the word "corner" in their name, which showed there was a "Corner Hotel" that was located on the corner of Barker and Lyttleton Streets in Castlemaine, Victoria and was built in June 1869. 8 The search results were sought to be adduced to prove the facts asserted in them. As such, they were inadmissible hearsay under s 59 of the Evidence Act 1995 (Cth) (Evidence Act) unless they fell within an exception or I waived the hearsay rule pursuant to s 190. 9 In relation to the websites, I considered that the screenshots were not business records, for the reasons I expressed in Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923 at [178]. The screenshots were solely descriptive of the businesses concerned. In relation to the historical searches, the parties did not make submissions about the possible application of the provisions of Part 4.3 of the Evidence Act. 10 During the hearing, I accepted the respondent's submission that I should waive the hearsay rule pursuant to s 190 of the Evidence Act. Section 190(3) provides that the Court may order that the hearsay rule does not apply in relation to evidence if (a) the matter to which the evidence relates is not genuinely in dispute or the application of that rule would cause or involve unnecessary expense or delay. Section 190(4) describes, without limitation, the following matters that the Court may take into account in deciding whether to exercise the power conferred by s 190(3): (a) the importance of the evidence in the proceeding; (b) the nature of the cause of action or defence and the nature of the subject matter of the proceeding; (c) the probative value of the evidence; and (d) the powers of the Court (if any) to adjourn the hearing, to make another order or to give a direction in relation to the evidence. 11 The asserted facts sought to be relied on by the respondents were relatively confined. Those facts were of two kinds: first, that there have been a number of hotels or pubs in Australia that have traded under a name that included the word "corner", as in the "Corner Hotel"; second, a number of those hotels or pubs have offered live music performances at the premises. The respondents contended that the evidence is relevant to the defence of the applicant's infringement claim as well as to the respondents' cross-claim seeking cancellation of the applicant's trade marks. 12 In my view, neither fact was genuinely in dispute. The dispute concerns the nature of the live music performances conducted at such premises and the extent to which they might be regarded as comparable to the live music and booking services provided by the applicant's business. Further, I consider that the application of the hearsay rule to the evidence proposed to be adduced would cause or involve unnecessary expense or delay. In the case of businesses that are currently operating, it would require the respondents to visit the premises in order to obtain direct evidence of their operations. The respondents have adduced evidence of that kind, but to replicate it across all possible venues would, in my view, involve unnecessary expense. In the case of businesses that have closed, it would require the respondents to obtain evidence from the authors of the historical records concerning such premises. Again, in my view, such a step would involve unnecessary expense. I have reached that conclusion in light of the facts that the evidence is relatively uncontroversial; the facts sought to be proved by the evidence are relatively confined, as set out above; and those facts are not determinative of the issues in dispute between the parties. 13 My rulings in respect of the remainder of the evidence follows. Applicant's evidence Affidavit of Leonard Thomas Hickey dated 25 October 2019 (CB2, tab 9) Paragraph 5(bb)-(dd) and the annexures there referred to (tabs 55 to 69) 14 The respondents object to paragraph 5(bb)-(dd) and the annexures there referred to (tabs 55 to 69) on the grounds of relevance, hearsay and unfair prejudice (under s 135 of the Evidence Act 1995 (Cth) (Evidence Act)). 15 In those paragraphs, Mr Hickey deposes that tabs 55 to 69 contain screenshots of the website Tripadvisor taken by Mr Hickey on 5 September 2019 following a search on The Jazz Corner Hotel. Tabs 62 to 69 are screenshots of the "Reviews" page for The Jazz Corner Hotel, and Tabs 55 to 61 are screenshots of the "Reviews" page for The Jazz Corner Hotel when Mr Hickey clicked on the additional filter for "jazz club". Relevantly, the "Reviews" page contains two types of information. The first are purported reviews of The Jazz Corner Hotel by customers. A relevant example under the name "thewalters5" and dated December 2017 is: A little hidden gem! Great location opposite a railway station and a short walk to all the restaurants of Hardware Lane. Plus it has a jazz club in the basement! Fantastic pillows, beautifully appointed and spectacular views over Melborne (sic). The second are responses from an employee of The Jazz Corner Hotel to the reviews. A relevant example from the General Manager of The Jazz Corner Hotel dated 14 October 2017 is: Dear David. On behalf of The Jazz Corner Hotel Team, we thank you for your 5 star review and your wonderful feedback is much appreciated. We work passionately every day to deliver friendly and genuine service. Your kind comments will be shared with the Team. I am glad that you have experienced our Jazz show at Birds Basement as we say "Relaxation Upstairs, Excitement Downstairs'! We look forward welcoming (sic) you back to "The Jazz Corner or Melbourne". Please feel free to contact me and it will be my pleasure to personally look after you. Kind Regards. Sevag Keroghilan General Manager 16 In relation to the responses from The Jazz Corner Hotel, the applicant submits that the responses are evidence of how the respondents use the marks in issue in the course of trade to refer to the services offered by the hotel (describing them, for example, as including live music performance as part of "our jazz show", and the hotel as part of the "the Jazz Corner of Melbourne"). The evidence is therefore relevant to the issues in the case and is not relied on for the truth of its contents (i.e. a hearsay purpose). In any event, the statements would constitute admissions for the purposes of s 81 of the Evidence Act. 17 In relation to the customer reviews, the applicant submits that the reviews are evidence of how consumers perceive the services offered under the marks in issue and the relationship between the respondents. The applicant says that the evidence is not relied on for the truth of its contents, but is relied on insofar as it reflects on the objective character of the use of the marks in issue by the respondents, and whether the respondents are jointly using the marks by presenting themselves to consumers as a single, integrated business. 18 I allow the evidence in so far as it contains responses by The Jazz Corner Hotel to reviews. For the reasons submitted by the applicant, the evidence is relevant and is not hearsay because it is not adduced to prove the facts asserted, but to prove that the respondents use the "Jazz" names in a particular manner or context in the course of their business. I note that the respondents did not contend that the responses recorded in Tripadvisor were not made by a representative of the respondents. 19 However, I will not allow the evidence in so far as it purports to contain customer reviews. In my view, such evidence is hearsay. Contrary to the applicant's submissions, the relevance of the evidence depends upon acceptance of an implied assertion that the review appearing on the website is an authentic review by a customer of The Jazz Corner Hotel. To that extent, the document is relied on to prove that asserted fact, which renders the document hearsay. Paragraph 9 and the annexures there referred to (tabs 78 to 81) 20 The respondents also object to paragraph 9 and the annexures there referred to (tabs 78 to 81). Each of the tabs contains an online article concerning the opening of The Jazz Corner Hotel. Tabs 78 and 81 are articles appearing in a publication titled Hotel Management on 8 March 2017 and 19 April 2018; tab 79 is an article appearing in a publication called Essential Magazine on 10 August 2017; and tab 80 is an article appearing in the Weekend Australian Magazine on 6 May 2017. 21 The applicant submits that the evidence is admissible for the same reason as the Tripadvisor reviews discussed above. Insofar as the newspaper and online articles include direct evidence from Mr Dadon (such as quotations from him), such evidence is relevant to the accessorial liability case against him. Insofar as they contain comments which reflect on the relationship between the respondents, they are relevant to whether the respondents are jointly using the marks. The applicant says that the evidence is not relied on for the truth of its contents. Rather, it is evidence of the way in which the respondents present themselves in the market as a single, integrated business by reference to the marks in issue, and is evidence of Mr Dadon's involvement in the promotion of The Jazz Corner Hotel in that manner (and would constitute an admission to that effect). 22 I will not allow the evidence. It is inadmissible hearsay. By the evidence, the applicant seeks to prove that Mr Dadon, and the respondents more generally, use the marks in issue in a particular way. However, proof of that fact depends on proof that the articles accurately record statements made by Mr Dadon and the respondents to the writers of the articles. That requires acceptance of an implied assertion that the article is an accurate record of Mr Dadon's statements. To that extent, the document is relied on to prove that asserted fact which, renders the document hearsay. The applicant did not call the writer of the articles to give evidence and did not put the contents of the articles to Mr Dadon in cross-examination, despite the fact that he was called to give evidence. Affidavit of Daniel Neil Rogers dated 13 December 2019 23 Consistently with rulings I made during the trial, I allow the evidence of Mr Rogers save that: (a) pursuant to s 136 of the Evidence Act, the words objected to in the first sentence of paragraph 7 ("because of its reputation as one of the most iconic live music venues in Australia") are limited to Mr Rogers' opinion of that fact; and (b) I note that the words in paragraph 8 "and people I have communicated with" are not read by the applicant. Affidavit of Leigh Garry Treweek dated 12 December 2019 24 Consistently with rulings I made during the trial, I allow the evidence of Mr Treweek, save that: (a) pursuant to s 136 of the Evidence Act, the evidence in paragraph 9 is limited to Mr Treweek's opinion of those facts; and (b) I note that the words in paragraph 10 "and people I have communicated with" are not read by the applicant. Respondents' evidence Affidavit of Jane Mary Good sworn 25 October 2019 Paragraphs 4, 5 and 6 – extracts from Trove 25 Ms Good gave evidence of online searches she conducted in September 2019 on the website https://trove.nla.gov.au, which is an online website maintained by the National Library of Australia bringing together content from libraries, museums, archives and other research organisations. Ms Good conducted a search on Trove for historical hotels using the name "Corner Hotel" including by reference to historical newspapers and books. 26 Consistently with rulings I gave during the trial in relation to evidence of a similar kind described earlier, I allow the evidence pursuant to section 190 of the Evidence Act. Paragraphs 7, 8, 9, 10, 11, 12, 16, 17 and 20 – websites 27 Ms Good gave evidence of online searches she conducted in September 2019 of webpages for hotels, bars, cafes and restaurants in Australia that have the word "Corner" in their names and ASIC searches of the companies conducting those businesses. The respondent relies on the evidence to prove the range of such businesses that use the word "Corner" in their names, and in some instances that live music is performed at the business premises. 28 Consistently with rulings I gave during the trial in relation to evidence of a similar kind described earlier, I allow the evidence pursuant to section 190 of the Evidence Act. Paragraphs 13, 18, 19 and 21 – newspaper articles 29 Ms Good gave evidence of online searches she conducted in September and October 2019 of webpages for various newspapers where the article related to "corner hotels". 30 The applicant objects to the articles on the grounds of relevance and hearsay. With respect to relevance, the applicant submits that the use of the word "corner" in connection with hotel services is not in issue in the proceeding; what is in issue is the use of the word "corner" in connection with the provision of live music services and ticket booking. 31 The respondents submit that the articles are relevant to section 41 of the TMA and the ordinary signification of the word "corner" in connection with hotel premises. The respondents say that the articles are not being relied upon for a hearsay purpose but as evidence of usage of the word "corner" in that context. The respondents further submit that the articles are also relevant to the infringement case, as third party usage will make it more difficult for a party to establish that use of the trade mark is likely to deceive. 32 I allow the evidence on a provisional basis. In so far as the evidence is relevant to usage of the word "corner" to establish the ordinary signification of the word in connection with hotels, I accept the evidence is not sought to be adduced for a hearsay purpose. However, I am not yet satisfied that the evidence is relevant to the issues to be determined. I will determine the relevance of the evidence when considering the closing submissions of the parties. Paragraphs 14 and 15 – Yellow Pages searches 33 Ms Good gave evidence of an online search conducted in September 2019 in the Yellow Pages online directory for the word "corner'' in the restaurant category (paragraph 14) and in the hotel category (paragraph 15). 34 The applicant objected to the evidence on the grounds of relevance and hearsay. With respect to relevance, the applicant reiterated that the use of the word "corner" in connection with hotel or restaurant services is not in issue in the proceeding. 35 The respondents do not press paragraph 14. In relation to paragraph 15 (Yellow Pages searches for hotels that include the word "corner"), the respondents submit that the result of the searches is admissible for the same reasons as given in respect of paragraph 13. 36 I disallow the evidence. The listing of a business name in the Yellow Pages does not establish the ordinary meaning of the word "corner". The only other potential relevance of the evidence is to establish the fact that many businesses trade under a name using the word "corner". That requires proof that the business listed in the Yellow Pages is in fact trading under the listed name and proof of the nature of the business being conducted. Neither fact is able to be proved by the Yellow Pages search results. Paragraphs 22 and 23 – Trade marks register searches 37 Based on rulings I gave during the trial in relation to evidence of a similar kind (specifically, paragraph 25 of Mr Dadon's affidavit affirmed 17 February 2020), the respondent did not read paragraphs 22 and 23. Affidavit of Jane Mary Good sworn 9 December 2019 Paragraphs 7 to 9 38 These paragraphs are not pressed by the respondents. Paragraph 10 39 By paragraph 10, Ms Good deposes to Victoria's licensing law of 1876 which required hotels to have a front or principal entrance separate from and in addition to the entrance to the bar or place where liquors not to be drunk on the premises were sold, and annexes a copy of the repealed legislative provision. 40 The applicant objects to the evidence on the ground of relevance, submitting that the evidence has no apparent relevance to the issues in the proceeding. In particular, there is nothing in the evidence which says anything about the provision of live music or ticket booking services. 41 The respondents submit that paragraph 10 is relevant to s 41 of the TMA because it shows an historical requirement for two entrances for a hotel and, hence, the need for a corner location. The respondent says that the evidence goes to the way in which the word corner is understood in connection with hotels from an historical perspective. 42 While Victoria's licensing law of 1876 may have little (if any) relevance to the issues in the proceeding, the objection is misdirected. The law of 1876 does not require proof by evidence: see s 143 of the Evidence Act. It may be referred to by the respondents whether or not it is reproduced in Ms Good's affidavit. Paragraphs 12 and 17 43 Ms Good is a solicitor. In paragraph 12, she gives evidence that, in her experience, it is not uncommon for businesses to cross-promote events or services. In paragraphs 13 to 16 Ms Good gives evidence about the activities of the Marriner Group, which operates The Forum, the Regent Theatre, the Princess Theatre, the Plaza Ballroom and the Comedy Theatre in Melbourne, Victoria, and certain events promoted by that Group. In paragraph 17, Ms Good deposes that the Marriner Group promotes the events at all of its venues and provides ticket booking and reservation services for all of its venues from a single website without a trade mark for any of these venues. 44 The applicant objects to paragraph 12 on the ground that the evidence is unqualified opinion and to paragraph 17 on the ground that the evidence is commentary. 45 The respondents submit that Ms Good is qualified to give this evidence because she is a solicitor and gives evidence that she has worked with businesses in the entertainment and hospitality industries for many years. 46 I reject the evidence. The statements do not rise above submission. Paragraphs 19 and 20 47 By paragraph 18, Ms Good deposes that Crown Melbourne advertises, provides information and offers ticket booking and reservation services for live music and theatre events at the following venues: The Palms at Crown, Towers Lobby, Mr Hive, Mesh, Lumia Bar and Nobu. By paragraph 19, Ms Good exhibits Crown Melbourne Limited's registered trade mark for the words "The Palms at Crown" (and logo) for class 43 services, and by paragraph 20, Ms Good exhibits a registered trade mark in the name of Nobuyuki Matsuhisa for the word "Nobu" for class 30 and 43 services. 48 The applicant objects to this evidence on the ground that it has no apparent relevance to the issues in the proceeding. 49 The respondents submit that paragraphs 19 and 20 are relevant in relation to third party business practices of cross-promoting other businesses, even within their own premises, which relates to the applicant's claims of accessorial liability and common design. 50 The relevance of the evidence is not apparent to me at this time. I admit the evidence on a provisional basis and will determine its relevance after receipt of closing submissions. Affidavit of Jane Mary Good sworn 20 February 2020 Paragraph 5 51 By paragraph 5, Ms Good gave evidence of an online search of the website and Facebook page of Charlie's Corner Cafe and Bar, which purports to show that the business offers live music and provides information about that live music. 52 Consistently with rulings I gave during the trial in relation to evidence of a similar kind described above, I allow the evidence pursuant to section 190 of the Evidence Act. Affidavit of Havva Nur Celik affirmed 20 February 2020 Paragraph 5 53 By paragraph 5, Ms Celik deposed that she visited The Corner Hotel Alexandra on 16 February 2020 and spoke to someone who was working there who said that: the live music performances at the hotel are advertised on the hotel's Facebook page; the live music performances were held every Saturday night; and the performers included local artists and bands as well as bands from Melbourne who were on tour. Ms Celik also exhibited screenshots of the hotel's website and Facebook page as retrieved on 20 February 2020. 54 The applicant objected to that part of the evidence that recorded statements made by the person who spoke to Ms Celik on the grounds of hearsay. 55 The respondents submitted that the evidence was relied upon not for a hearsay purpose, but merely as evidence of Ms Celik's recollection of her conversation with someone inside the hotel. 56 I reject the respondents' submission. The only relevance of the evidence is to prove the truth of what was said to Ms Celik, which renders the evidence hearsay. In relation to the exhibited screenshots, consistently with rulings I gave during the trial in relation to evidence of a similar kind, I allow the evidence pursuant to section 190 of the Evidence Act. Affidavit of Matthew Lagamba affirmed 20 February 2020 Paragraphs 5, 6, 7, 8 and 9 57 By paragraphs 5, 6, 7 and 8, Mr Lagamba deposed to visits he made to various businesses that trade under names that included the word "corner". In the third sentence of paragraph 6, Mr Lagamba deposed that he spoke to a person who was working at the visited premises who said that karaoke nights were to be held on Friday nights at the function room of the premises commencing in the next fortnight. By paragraph 9, Mr Lagamba exhibited screenshots taken of the website and Facebook page of a business called The Corner Stone. 58 The applicant objected to the evidence on the ground of hearsay. 59 Paragraphs 5, 7 and 8 are not hearsay but direct evidence. I therefore allow the evidence. In relation to paragraph 9, consistently with rulings I gave during the trial in relation to evidence of a similar kind, I allow the evidence pursuant to section 190 of the Evidence Act. 60 Apart from the third sentence, paragraph 6 is also direct evidence and I allow that evidence. In relation to the third sentence, the respondent submitted that the evidence was relied upon not for a hearsay purpose but merely as evidence of Mr Lagamba's recollection of his conversation with someone inside the premises. I reject that submission. The only relevance of the evidence is to prove the truth of what was said, which renders the evidence hearsay. I disallow the third sentence. I certify that the preceding sixty (60) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice O'Bryan. Associate: Dated: 26 March 2020 SCHEDULE OF PARTIES VID 330 of 2019 Respondents Second Respondent: BIRD'S BASEMENT PTY LTD ACN 607 922 609 Third Respondent: SAINT THOMAS PTY LTD ACN 612 480 109 Fourth Respondent: ALBERT DADON